Thursday, 26 March 2015

On 23 and 24 March 2015 the Select Committee held its 13th meeting at the EPO in Munich.

According to a leaked document, reported earlier, the EPO President Battistelli had proposed two different renewal fees schedules for the unitary patent. These schedules are referred to as TOP4 and TOP5. In the TOP4 and TOP5 proposal the level of the renewal fee of the unitary patent would be equal to the sum of the national renewal fees payable in the 4 or 5 states in which European
patents are most frequently validated. In the TOP5 proposal there is a 25% reduction for the early renewal for some applicant, e.g., the SMEs.

In a communiqué of the select commission these proposals for the renewal fees have now been confirmed.

There have been complaints from the industry that these proposals are too expensive. On the other hand the renewal fees are a major source of income for the patent offices. All (participating) national patent offices are represented in the Select Committee.The Member States debated the level of the renewal fees and how these renewal fees should be distributed among the participating member states.

In a traditionally European patent only a state in which the patent is validated benefits from renewal fees paid after grant. In a unitary patent this natural distribution method is unavailable, as the unitary patent will be valid in all participating member states--no separate validation is needed.

Nothing has been decided, neither on the level nor on the distribution of the renewal fees, but, the Select Committee confirmed a commitment to take these decisions by the end of June 2015.

Tuesday, 24 March 2015

It appears that the Luxembourg parliament is making progress, or even ratified the Agreement on a Unified Patent Court. Ratification of the unified patent court implies that the unitary patent will be valid in Luxembourg as well.

The website of the Chambre des Députés informs us of a 'Premier vote constitutionnel (Vote positif)' (Firstconstitutional vote(Positive vote)) and that 'Une demande de dispense du second vote a été introduit'(An application for exemptionof the secondvoting was introduced).

I can't tell from Luxemburg's website if the exemption was accepted or not. [Update: according to commenter TreatyNotifier this was accepted]

For now ratification has not yet shown up on the the site of the Council of the European Union, where the instrument of ratification will have to be deposited. We have seen with
previous ratifying countries that there may be some time between the
ratification in parliament and the deposition of the instrument.

All 54 member voted in favor of the Unified patent court. According to the tweet below the discussion was mainly about language and costs--two unitary patent hot button items.

Wednesday, 11 March 2015

The unitary patent changes the way renewal fees are paid. If you choose for classic EP validation, then after grant you cease to pay renewal fees to the EPO, but start to pay national renewal fees. In case of a unitary patent, then after grant you will continue to pay renewal fees to the EPO, but do not start to pay national renewal fees. [Except of course for non-participating countries like Spain or Italy, where one would still do national validation and pay a national renewal fee]. One of the main open questions regarding the unitary patent is the level of the renewal fees. Discussions about the renewal fee have been ongoing for some time, but are not public. Fortunately, IpKat has now leaked portions of a document "Proposals for the level of renewal fees for
European patents with unitary effect" that, apparently, Battistelli,the president of
the EPO, has sent to the Select Committee. I haven't seen the document myself yet, and am basing myself on what IpKat shared with us.The first impression is that the document is not very surprising. For a long time, it was expected that the level of the unitary renewal fee would be based on the sum of about 4 or 5 national renewal fees. This document confirms that rumor. For patent proprietors who have license income based on the size of the economies their patents cover, it seems the unitary patent could be a good deal. For the price of a medium sized portfolio (4 or 5 validated countries) the area covered will be much increased.

In the document, two detailed plans for the unitary renewal fee are proposed. Both proposals have the same structure, in three phases:

Years 3 to 5: same as the current EPO renewal fees for patent applications (the "internal renewal fees (IRF)"

Years 6 to 9: a transitional level
between the IRF level and the year 10 level

Years 10 and beyond: a level equivalent to the
total sum of the national renewal fees payable in the states in which European
patents are most frequently validated (TOP level).

It is in the TOP level where the two proposals diverge.

In a first proposal the Year 10 onwards level is
based on current renewal fee levels for FOUR European countries (TOP 4 level). In the second proposal the Year 10 onwards level is based on current renewal fee levels
for FIVE European countries (TOP 5 level) but with a reduction for certain
categories of patentees, namely SMEs, natural persons, non-profit
organisations, universities and public research organisations.

The following table gives the level of the proposed fees. The table is copied from the IpKat posting:

The first thing to notice is that both of the proposed renewal fees (Top4 and Top5) are actually lower than the EPO's current internal renewal fees for the first 10 years. So getting a grant within these first 10 year would lower your renewal fee cost compared to the renewal fee you would have to pay if your application was not yet granted.

To put these numbers into perspective I compared the renewal costs for years 6 and 15 for traditional validations of three different sizes to a unitary patent using the TOP4 or TOP5 fee level.

As expected, for large validations the unitary patent is less expensive, while for a small validation the unitary patent is more expensive. The more interesting case is the medium validation. For the year 6 renewal fee, the unitary patent is more expensive, but for the year 15 renewal fee the TOP5 unitary patent is almost exactly the same.

Agent costs and translation costs have not been taken into account. My first impression is that these proposals are not that bad. Especially, the TOP4 scenario seems like a good deal. Even compared to a modest portfolio, you get coverage for a much large area for the same amount of money. On top of this, you save on translation and administrative overhead.

Monday, 9 March 2015

At present Spain has two legal challenges against the unitary patent system pending with the Court of Justice (Cases C-147/13 and C-146/13). We reported earlier that the Advocate General published its opinion in these two cases. (Also discussed here.)Both opinions of the Advocate-General were available in 22 different languages but not in English. This has now been rectified and an English translation is now available, via the links provided above.

Monday, 2 March 2015

The FFII notes that the European commission clarified that the unitary patent will not change the patentability status of computer programs. In an update to a Frequently Asked Question the European commission states it as follows:

The patentability requirements for European patents with unitary effect
are identical to those of "classical" European patents. The envisaged
regulation on unitary patent protection does not contain any particular
disposition or derogation on the patentability conditions for
inventions.

The European commission is of course completely correct in this assessment. A unitary patent is obtained by first getting a regular European patent granted at the EPO. Within one month after the
mention of the grant is published, the proprietor of the new patent can file a request for unitary effect with the EPO. (Article 9 Regulation 1257/2012). The unitary patent makes no substantive changes to the process at the EPO before grant.

I can thus also predict that the unitary patent will not change the patentability of, say, biotech inventions or any other category of patents.

Under European law, something is not inventive just because you implemented it in software; you cannot get a patent for software 'as such'. However, if the software has technical character and is inventive over the state of the art the EPO will award a patent for it. Thus once the unitary patent system has started it will be possible to get protection of inventions implemented in software with one unitary patent in all participating member states.